Thursday, August 12, 2010

Overcome obviousness by explaining technical difficulties rather than just restating the functional objectives of the combination (Ex parte Port-A-Cool)

Takeaway: The reexam decision Ex parte Port-A-Cool, LLC shows that to rebut a prima facie case of obviousness, you need to do more than merely assert that the combination of features represents more than the exercise of a POSITA's skill. You need to actually explain why and how this is so by providing details of the technical difficulties and of the skills required for attaining such objectives.

Details:
Ex parte Port-A-Cool, LLC (decision, rehearing)
Appeal 2009-001702, Reexam 90/006,567, Tech. Center 3900
Decided October 8, 2009

The claims in this patent under re-exam were directed to a housing for an evaporative cooler. The rejections on appeal included an obviousness rejection using only a single reference (Calvin). Here is a portion of the relevant claim, with the limitation at issue being emphasized:
1. A cooler housing supported on a base, having an exterior, an interior, and front and rear openings, where the base is integrally formed with the housing ...

The Examiner acknowledged that the Calvin reference did not teach a "base ... integrally formed with the housing." The Examiner used the "obvious design choice" to close this gap, citing to In re Larson for the proposition that "merely making integral parts that are separate involves only routine engineering design."

The Applicant argued that In re Larson does not stand for a per se rule. The Examiner acknowledged this, and restated the rejection as an obvious design choice "absent any teaching of criticality or unexpected results by the Applicants."

In the Reply Brief, the Applicant argued that the declaration evidence from the inventors (submitted before appeal) rebutted a prima facie case of obviousness:
The Declarations establish the problems encountered in the art, the prior art solution to the problems and the time duration in which the invention was made in light of one skilled in the art, including the educational, technical and industrial experience of the declarant. Such factors are indicative that the claimed invention is not obvious to those of skill in the art.

On appeal, the Board applied one of the rationales from KSR to affirm the obviousness rejection. Even considering the declaration evidence as to why the modification would not be obvious, the Board found:
There is no persuasive evidence that making the support frame integral with the housing would have been beyond the skill of one of ordinary skill in the art. [KSR v. Teleflex, 550 US 398, 417.] In this regard, the claimed invention "merely applies the well known technique of making various structural features integral to yield predictable results." Id.
(Emphasis added.)
After the appeal decision, the Applicant asked for a rehearing. In the Request for Rehearing, the Applicant argued that the declaration "presented details of the development of the invention" which "required extensive efforts by one of ordinary skill the art, and was not a 'predictable variation'." The Applicant argued that the Board's statements referring to "no persuasive evidence" and "merely applies the well known technique" were contrary to the declaration evidence.

In its Decision on Request for Rehearing, the Board explained that the declarations were unpersuasive because they did not present details to explain why integrally forming the base with the housing would be beyond the skill of a POSITA. The Applicant's rebuttal to the prima facie case was an assertion of technical challenges beyond the skill of a POSITA, but the evidence did not support that assertion.

... Contrary to the Appellant's assertion, in our view, the Declaration does not present "details" that persuade us that integrally forming the base with the housing would have entailed skills beyond those of one of ordinary skill. The Declaration states that integrally forming the base with the housing was "troublesome since it required the combination of two separate functional components into one while incorporating all of the stability characteristics of the caddy base and the operational features of the housing and which further addressed the bottom surface weakness of the rotomolded caddy base." (Decl. ¶ 11). However, such a general statement is not much more than simple articulation of the functional objectives for developing the claimed invention, and does not provide details as to the technical difficulties and skills required for attaining such objectives.
     The Declaration also specifies that a void that is above the caster mounting surface caused the casters to collapse (Decl. ¶ 11), but it does not provide persuasive evidence or articulate technical reasons as to why redesigning of that area was technically difficult or would have been beyond the skills of a person skilled in the art. In this regard, while the declarant, Mr. Calvert, may be skilled in the relevant field of coolers and in manufacturing of coolers, the Appelllant has not persuasively shown that the level of ordinary skill in the art is such that arriving at the claimed invention, which includes an integrally formed support base and housing, would have involved skills beyond those of one of ordinary skill.
     While the Declaration further states that "molds had to be continually re-designed in order to address the issue of stability[,]" (Decl. ¶ 11), with the exception of the above noted "void" issue, no further details are provided with respect what other technical issues or unforeseeable problems were addressed during by each redesign and how many redesigns were required. Furthermore, while the general assertion is made that "a great deal of time and resources were expended to solve these issues[,]" (Decl. ¶ 12), no details are provided with respect to the amount of time and resources expended.
     The Appellant's argument for non-obviousness is based on the assertion that there were technical challenges to the claimed invention that were beyond the skill set of one of ordinary skill in the art, the solution for which was inventive and took substantial time and resources to develop. However, the evidence does not reflect these challenges and the alleged inventive contribution.
(Emphasis added.)
My two cents: Arguing that the combination of references doesn't teach one of the limitations is almost always a better choice than arguing that the combination isn't obvious. But if you're stuck with arguing obviousness itself,  this decision provides an excellent explanation of what it takes to overcome obviousness at the BPAI. Although this decision involves declaration evidence, the same principles apply to attorney argument. In short, you're unlikely to overcome an obviousness rejection by arguing "No, it's not just a predictable variation" or "No, it's not a simple substitution." You need to explain why that's so, in as much detail as possible.

This decision also shows that this requirement for a real explanation is still present when you submit declaration evidence. You're unlikely to overcome an obviousness rejection with "No, it's not just a predictable variation" or "No, it's not a simple substitution." even when your expert/inventor makes this as a  sworn statement.

Neither the Applicant nor the Examiner discussed KSR, which was relatively new law when this application went to appeal.

27 comments:

  1. What I don't understand about this decision is the requirement that the inventor have extraordinary skill in the art to deserve a patent ("the [invention] would
    have been beyond the skill of one of ordinary skill in the art"). As far as I know, that is not the law. It is also, quite plainly, contrary to public policy.

    Obviousness is determined with reference to the PHOSITA. But it's a fallacy to think that, because obviousness is determined with reference to the PHOSITA, that a person needs to have extraordinary skill to get a patent. The PHOSITA standard determines how obvious the invention must be, not how skilled the inventor must be - as long as the invention is nonobvious to PHOSITAS, it doesn't matter how skilled the inventor was applying for the patent. It is equally possible, and probably far more likely, that the inventor had ordinary skill but simply invented something that was not obvious to himself (or any other ordinarily skilled artisan). There is no requirement for heightened skill.

    In fact, 103a says very clearly that "[p]atentability shall not be negatived by the manner in which the invention was made." So an inventor can merely stumble upon an invention and get a patent on it (there's good case law on that point too). Not only is the inventor not required to have extraordinary skill, but even inventors of less-than-ordinary skill can get patents if they somehow discover/invent a non-obviousness invention.

    As far as I am concerned, the Board's indication otherwise is reversible error. I bet Judge Newman would tear that misstatement of law up.

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  2. Looks like good advice to me... if you can explain the technical difficulties, you can show that a combination isn't so obvious. I haven't had the best of luck with this with examiners... the old fallback of finding one feature which isn't shown in any of the references seems to be the best bet.

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  3. >finding one feature which isn't shown in any
    >of the references seems to be the best bet.

    Good point. And I absolutely agree: always argue Does-Not-Teach if possible.

    That said, note that this case involved a single-reference obviousness rejection. Which makes it particularly hard -- maybe virtually impossible -- to argue Does-Not-Teach. Because the rejection acknowledges the feature is missing, and relies on a pre-canned rationale to close the gap.

    Here, the Examiner used the "design choice" rationale, and the Board used KSR's "well known technique" rationale. How do you argue that integration is not a well-known technique, or that it's not a design choice?

    I think that maybe you don't -- that you argue instead that even if a POSITA *could* use this technique or make this design choice, a POSITA would *not* do so in this particular scenario. And as this case shows, you don't just make the argument, you actually explain, using specific facts, why this is true.

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  4. You try to explain such things to attorneys but they have to hear it at the highest levels...

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  5. >You try to explain such things to attorneys
    >but they have to hear it at the highest
    >levels...

    You didn't identify yourself as an Examiner, so I wouldn't dare *presume* that you're speaking as one.

    If you *are* saying that Examiners explain to attorneys that they must explain rather than merely assert to overcome obviousness ...

    That's not been my experience. Office Actions are just as full of boilerplate and just as light on facts as many of the responses I read in file histories. I get the impression neither side knows what the other is really thinking because neither has put it on paper.

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  6. I really don't get this decision. I think that they did exactly what the court was asking them to do. IMO, they did articulate why it wasn't obvious to integrate the features. This looks like a decision (and end) that was made by the court and then they developed reasoning (means) to support the decision, even though the reasoning wasn't sound.

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  7. Kip Werking said...
    >What I don't understand about this decision is
    >the requirement that the inventor have
    >extraordinary skill in the art to deserve a
    >patent ("the [invention] would have been
    >beyond the skill of one of ordinary skill in
    >the art") ... As far as I know, that is not the law.

    Taken alone, that statement is contrary to the law. But I think when viewed in context, it is one part of the law of obviousness.

    Here's what I mean...

    A claim is obvious when:
    1) All elements are disclosed by the combination of references.
    2) A POSITA has the skill to be *able to* combine the references in the manner claimed.
    3) A POSITA has reason to combine.

    In Port-A-Cool, the Applicant didn't even argue Requirement 1. As for Requirement 3, the Board found a generic reason to combine: integrating structural features is a well-known improvement over separate features.

    The Board's statement that you highlighted just another way of stating Requirement 2. "Integrating the two structures would not have been beyond the ordinary skill of a POSITA" is the same as Requirement 2 "POSITA has the skill to be able to integrate the two structures".

    Right?

    You seem to read the Board's statement as non-obviousness *requires* extraordinary skill.

    I read it as saying something more narrow: when combining the features in the manner claimed is not something that a POSITA knows how to do, that's an indication of non-obviousness.

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  8. >IMO, [Applicants] did articulate why it
    >wasn't obvious to integrate the features.

    Are you referring to the explanation by the Applicants in the declaration -- that integration was "troublesome" ?

    If so, then my answer to that is, yes, the Applicant's presented a generic explanation, ie, it was hard to do. But the Board's point was that they didn't explain *why* it was hard to do. The starting point is that a POSITA has some skill. As the Board said, the Applicants did not explain "why redesigning of that area was technically difficult or would have been beyond the skills of a person skilled in the art."

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  9. Karen,

    After reading your helpful comments, I needed to go back and read the decision (which I probably should have done the first time). In essence, I agree with you. My earlier comment was too quick.

    The issue here derives from the following KSR quote, quoted in the Port-A-Cool opinion:

    “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”

    In other words, for this one example/template for obviousness in KSR, there are three things:

    1. a technique has been used to improve a device
    2. a person of ordinary skill in the art would recognize that it would improve similar devices in the same way
    3. the application is not beyond the skill of the ordinary artisan

    In other words, denying 3 is a way to rebut a prima facie case of obviousness resulting from 1 and 2. Once 1 and 2 obtain, the claims will be obvious, absent a failure of 3.

    So, I think I was right that, in this narrow situation, the court is requiring that the invention involve extraordinary skill in order to be non-obviousness.

    However, I think you are right that this is just one narrow situation in which this is required. KSR describe many different, other situations in which obviousness may be found. Many or most of these other situations do not (to my knowledge) require extraordinary skill for non-obviousness. There is no general requirement for extraordinary skill.

    In that regard, the holding seems more reasonable. I'll try to be more careful commenting in the future.

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  10. Kip Werking said:
    >I was right that, in this narrow situation,
    >the court is requiring that the invention
    >involve extraordinary skill in order to be
    >non-obviousness.

    Agreed about the requirement. And also that it applies to the "applying known technique for improvement" rationale from KSR.

    Not sure about "narrow", though. First, this is a very common rationale. Second, I believe this rationale actually blends in to the other generic rationales mentioned in KSR and discussed in MPEP 2141.

    Kip, your original comment was thought provoking. I understand the generic rationales and their requirements better now because of this discussion.

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  11. Paraphrased quote from the other responses: "Arguing that the combination or the suggested modification of the prior art lacks a claim element is usually a more successful argument that no proper justification for the modification."

    I suggest you make both types of arguments, if you can. Suppose you want to file a reissue application with the goal of achieving a claim that does not have the element you previously argued was not in the modification. You may have a hard time getting that through. If you have the other argument on record, also, well, maybe it will also be hard but less so (depends on the evolution of the recapture rule at the time).

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  12. >suggest you make both types of arguments,
    >if you can.

    I always make a Does-Not-Teach argument in a 103, if there is one.

    It's fairly common for me to use a Motivation-To-Combine. By which I mean attacking the specific motivation asserted by the Examiner.

    Less common for me is a Not-Easy-to-Combine argument. Meaning, even if the elements are taught, fitting them together is hard which is an indication of non-obviousness. This is the type of argument where you should provide details, not just conclusory statements.

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  13. >make both types of arguments, if you can.
    >[In case you file a reissue with a claim to >remove an element.]
    >(depends on the evolution of the recapture
    >rule at the time).

    Interesting. Hadn't thought about reissue before.

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  14. "The Examiner acknowledged this, and restated the rejection as an obvious design choice 'absent any teaching of criticality or unexpected results by the Applicants.'"

    This is the real travesty in this case. KSR requires that the examiner provide a reason why one of ordinary skill in the art would modify/combine the prior art. Allowing the examiner to essentially say it would have been obvious absent a reason/explanation from applicant why it would not have been obvious improperly allows the examiner to shift the burden.

    I see this "reasoning" from the examiners all the time. I challenge it every time. There's no requirement that any feature of the claimed invention be "critical" or "critically non-obvious." There's no requirement to submit evidence of unexpected results (i.e. secondary considerations) unless the examiner establishes a prima facie case of obviousness.

    Sad to see the Board let the examiner get away with improperly shifting the burden.

    Let's hope the appellant appeals to the Fed. Cir.

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  15. " I challenge it every time. "

    And then get smacked down. There is no improper burden shifting here. Courts already held that in these specific circumstances obviousness is shown a specific way and they gave the reasoning no doubt in that opinion.

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  16. "Courts already held that in these specific circumstances obviousness is shown a specific way and they gave the reasoning no doubt in that opinion."

    The analysis required to establish a prima facie case of obviousness is the same in every circumstance. There are no per se rules of obviousness.

    If the appellant does appeal, I hope they get new counsel.

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  17. Anonymous said:
    >Allowing the examiner to essentially say it
    >would have been obvious absent a >reason/explanation from applicant why it
    >would not have been obvious improperly
    >allows the examiner to shift the burden.

    Agreed. But that's *not* all the Examiner said.

    The Examiner cited In re Larson to provide a generic rationale for making the modification -- integrating has well-known advantages. The Examiner made a further finding that such a modification was within the skill of a POSITA. That's the Prima Facie case.

    It was only after presenting the PF case that the Examiner noted the Applicant had not attempted to rebut the PF case by explaining how integrating produced results that were not predictable.

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  18. >Sad to see the Board let the examiner get
    >away with improperly shifting the burden.
    >Let's hope the appellant appeals to the
    >Fed. Cir.

    As I've said elsewhere in this comment thread, I think the Examiner did make a PF case. So I don't see this as a good candidate for appeal.

    FWIW, the affirmance rate at the Fed Cir. for BPAI decisions involving 103 seems to be well over 80%.

    In re Vaidyanathan and Rolls-Royce v. UTC being notable exceptions.

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  19. >I think the Examiner did make a PF case.
    >So I don't see this as a good candidate for
    >appeal.

    Here's a more interesting question. What if the Board makes a good PF case - and I definitely think they did here -- but the Examiner did not.

    What does the Federal Circuit do with that? Supposedly, the Board is supposed to *review* the *Examiner's* findings and reasoning for error. Yet often the Board does a lot of fact finding on their own, and a lot of reasoning on their own (ie, about motivation to combine).

    Here, I think the Examiner didn't explain his PF case very well. He relied on design choice and left a few holes in his argument.

    The Board used the KSR rationale "apply well known techniques to obtain predictable results". Which I believe is a good fit here.

    So at this point, the BPAI has put findings and reasoning on the record. Will the Federal Circuit simply review this under the substantial evidence standard?

    Or can the Applicant frame the issue as "the Board erred because it did not review the Examiner's findings and reasoning, but instead substituted their own" ?

    I suspect that No, this is not an available argument at the Federal Circuit. I think it *should* be. And maybe it just hasn't been tried yet?

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  20. "The Examiner cited In re Larson to provide a generic rationale for making the modification -- integrating has well-known advantages."

    There are no "generic" rationales for determining obviousness. The reason why one of ordinary skill in the art would modify/combine references must be based on the facts of the application being examined.

    The Board cited Dystar for the proposition of "implicit" motivation (i.e. "it's always obvious to make the prior art stronger,cheaper, cleaner, faster, lighter, smaller, more durable, more efficient" etc.), but they don't provide any evidence, or even any reasoning or explanation, of how integrally forming the separate base and the housing of Calvert would achieve any of these objectives. It's all hand waving.

    The day that "generic" motivation to "make the prior art better" becomes the standard of obviousness, we can all pack up our practices and go home.

    "I suspect that No, this is not an available argument at the Federal Circuit. I think it *should* be. And maybe it just hasn't been tried yet?"

    I agree. You're not going to get the Board reversed simply because they did the job the examiner was supposed to, but didn't.

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  21. >There are no "generic" rationales for
    >determining obviousness. The reason why a >[POSITA] would modify/combine references must
    >be based on the facts of the application
    >being examined.

    Perhaps we're quibbling with words here. In holding the the TSM test was not the only way to show obviousness, KSR mentioned a number of rationales that could be used, one of which is the one used by the Board in Port-A-Cool: "apply well known techniques to obtain predictable results".

    I view these as generic rationales because they apply to different kinds of technologies.

    But it's also true that the facts of a specific application must be "plugged into" a generic rationale. That is, the Examiner should show that the techniques at issue are indeed well-known and that the results are indeed predictable.

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  22. >The Board cited Dystar for the proposition
    >of "implicit" motivation ... but they don't
    >provide any evidence, or even any reasoning
    >or explanation, of how [claimed feature]
    >would achieve any of these objectives.

    It's true that this explanation is not present in the BPAI decision. But the Examiner did provide such an explanation in the last Office Action and in the Answer.

    I gave the Prima Facie case only cursory treatment in my original post because that wasn't what I found interesting. And perhaps because I read the file history and didn't think the PF case was ridiculous.

    But I now appreciate from these comments that the PF case looks weak if you read the opinion alone. The Board was sloppy here in not stating they were adopting the Examiner's reasoning. Usually they say something like "we agree with the Examiner's findings / reasoning and adopt it as our own."

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  23. "It's true that this explanation is not present in the BPAI decision. But the Examiner did provide such an explanation in the last Office Action and in the Answer."

    I looked for it, but all I saw was hand waving by the examiner. There was some "reasoning" about making them integral when using smaller housings or some such speculation on the part of the examienr, but it didn't appear to have anything to do with the claimed invention. I certainly didn't see anything resembling substantial evidence in support of this "reasoning."

    The "reasoning" that a claim is obvious "in the absence of criticality and/or unexpected results" is improper. Secondary considerations (e.g. unexpected results) may be indicative of non-obviousness, but the absence of secondary considerations is NOT indicative of obviousness. So when the examiner "reasons" that the claim is obvious because the applicant hasn't provided evidence of non-obviousness, that is improper.

    Having said that, there was some, IMO, mighty poor advocacy in this case. It's not a shock the applicant lost.

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  24. >>Examiner did provide such an explanation in
    >>the last Office Action and in the Answer.
    >
    >I looked for it, but all I saw was hand
    >waving by the examiner.

    I admit I found the Examiner's reasoning really hard to follow.

    The one thing he did state clearly is a motivation for/benefit of the combination: making a piece integral reduces the manufacturing steps.

    >didn't see anything resembling substantial
    >evidence in support of this "reasoning."

    Agreed the Examiner did not produce evidence, only reasoning. But does he really need to produce evidence to support the statement "making a piece integral reduces the manufacturing steps"?

    Both Examiners and Applicants routinely opine about the teachings of a reference and about what POSITAs know.

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  25. >The "reasoning" that a claim is obvious "in
    >the absence of criticality and/or unexpected
    >results" is improper.

    Agreed. But secondary considerations are one way of rebutting a PF case of obviousness. That's the context in which the Examiner made that statement.

    A PF case is made when 1) All elements are disclosed by the combination of references;
    2) A POSITA has the skill to be *able to* combine the references in the manner claimed; and 3) A POSITA has reason to combine.

    In Port-A-Cool, the Examiner made findings about 1 and 2, and provided some reasoning for 3.

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  26. "The one thing he did state clearly is a motivation for/benefit of the combination: making a piece integral reduces the manufacturing steps."

    So what? If forming the separate base and the housing of the Calvert reference integrally (i.e. unitarily) takes longer them forming the pieces separately and then assembling/fastening them together, is it still obvious? If the mold that's needed to integrally form parts that are currently separately formed is rather complex or intricate, and results in a part rejection rate that is 5 times the rejection rate of separately molded parts, is it still obvious?

    See where I'm going with this?

    Allowing the examiner to provide some "generic" reason (e.g. reducing manufacturing steps) not supported by any substantial evidence is tantamount to allowing the examiner to say, "It would have been obvious to modify/combine the prior art references to make them better" and then shift the burden to the applicant to present evidence in rebuttal. Good luck with that.

    "But does he really need to produce evidence to support the statement 'making a piece integral reduces the manufacturing steps'?"

    Well, if the examiner doesn't, then the statement is nothing more than the examiner's opinion, or argument. The examiner's arguments are no more evidence than the attorney's arguments.

    "Both Examiners and Applicants routinely opine about the teachings of a reference and about what POSITAs know."

    What a reference discloses is a question of fact. So if the examiner or attorney is not pointing to some specific disclosure of the reference, their opining doesn't amount to much. If you're arguing/debating some specific disclosure of the reference, opine away. And in the absence of any evidence of the level of ordinary skill in the art, the POSITA is assumed to at least have the knowledge of the disclosure of the references.

    "Agreed. But secondary considerations are one way of rebutting a PF case of obviousness. That's the context in which the Examiner made that statement."

    I must confess that I didn't see it that way at first, but you're probably correct about that. The way I usually see the "it's obvious in the absence of criticality and/or unexpected results" line of "reasoning" is in the very first rejection, where it's very clear that the examiner has concluded that a claim is obvious from the lack of evidence of non-obviousness. That's improper.

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